Case: 1:08-cv-03840 Document #: 121 Filed: 05/04/09 Page 1 of 11 PageID #:
IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION
EVERYTHING BASEBALL, ) ) Plaintiff, ) ) v. ) No. 08 C 3840 ) WILSON SPORTING GOODS COMPANY, ) WILSON HUNT INTERNATIONAL LTD., ) SCHUTT SPORTS, INC., EASTON-BELL ) SPORTS, INC., HILLERICH & BRADSBY ) ) Co., AMPAC ENTERPRISES, INC., ) RAWLINGS SPORTING GOODS, INC., ) ADIDAS AMERICA, INC., REEBOK ) INTERNATIONAL LTD., RIDDELL SPORTS, ) INC., DIAMOND SPORTS CO., INC., and ) NOCONA ATHLETIC GOODS COMPANY, ) ) Defendants. )
MEMORANDUM OPINION AND ORDER
Plaintiff Everything Baseball, the assignee of U.S. Patent No.
6,161,226 (the “‘226 patent” or the “patent-in-suit”), sued the
above-named defendants for patent infringement, alleging that they
sell baseball chest protectors that infringe the ‘226 patent.
Defendants Wilson Sporting Goods, Ampac Enterprises, Easton-Bell
Sports, Hillerich & Bradsby, Wilson Hunt International, Rawlings
Sporting Goods, Schutt Sports, Riddell Sports,1 and Adidas America
(collectively, “defendants”) have moved for summary judgment on the
1Defendant Riddell was dismissed from the lawsuit after the motion was filed, but its name continues to appear on briefs filed on defendants’ behalf. Defendants Reebok, Diamond, and Nocona have also been dismissed. Case: 1:08-cv-03840 Document #: 121 Filed: 05/04/09 Page 2 of 11 PageID #:
ground that the ‘226 patent is invalid as anticipated by three
prior art references: U.S. Patent No. 5,530,966 (the ‘966 patent)
issued to Joseph West; a chest protector manufactured and sold by
Douglas, which embodies the ‘966 patent, and the “hang tag”
attached to a chest protector manufactured and sold by Wilson under
the trade name West Vest, which also embodies the ‘966 patent
(collectively, the “West references”). For the reasons discussed
below, defendants’ motion is denied.
I.
Summary judgment is proper where the record shows that there
is no genuine issue of material fact and that the moving party is
entitled to judgment as a matter of law. Boumehdi v. Plastag
Holdings, LLC, 489 F.3d 781, 787 (7th Cir. 2007); FED. R. CIV. P.
56(c). I must construe all facts in the light most favorable to
the non-moving party and draw all reasonable inferences in favor of
that party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255
(1986).
Although patent claims are presumed valid, that presumption
can be overcome-–and the claims invalidated as “anticipated”–-where
clear and convincing evidence shows that the claimed subject matter
was previously described in a single prior art reference. Sanofi-
Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir. 2008);
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1575 (Fed. Cir.
1987) (clear and convincing standard). “To anticipate, a single
2 Case: 1:08-cv-03840 Document #: 121 Filed: 05/04/09 Page 3 of 11 PageID #:
reference must teach every limitation of the claimed invention.”
Cohesive Technologies, Inc., v. Waters Corp., 543 F.3d 1351, 1364
(Fed. Cir. 2008) (quoting MEHL/Biophile Int’l Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999)). Anticipation is a question
of fact. Sanofi-Synthelabo, 550 F.3d at 1082; Eolas Technologies
Inc., v. Microsoft Corp., 399 F.3d 1325, 1332 (Fed. Cir. 2005).
The parties agree that to anticipate the ‘226 patent, at least
one of the West references must demonstrate all of the following
limitations: “a flexible main pad having...an abdomen portion”; “a
flexible shoulder guard” that extends “over the shoulder of a
wearer”; and “adjustable straps attached at one end to the abdomen
portion of the main pad.” The parties also generally agree on the
structure of the West references. Nevertheless, the parties’
positions on whether these references disclose the aforementioned
limitations are diametrically opposed: defendants assert that each
West reference demonstrates all of the limitations, while plaintiff
argues that none of the references contains any of them. I need
not examine all of these disputes, however, because even a single
material dispute relating to each of the references is sufficient
to deny summary judgment.
3 Case: 1:08-cv-03840 Document #: 121 Filed: 05/04/09 Page 4 of 11 PageID #:
II.
1. The Douglas chest protector
After viewing, handling, and observing the Douglas embodiment2
of the ‘966 patent as worn by a law clerk, I am not persuaded that
this reference indisputably contains “an abdomen portion” as
required by the ‘226 patent. When worn in what appears to be the
proper position (as I assume was the case in the photographs
defendants submitted in support of their motion), the Douglas chest
protector comes down to just below the sternum, i.e., several
inches above the navel, leaving a large portion of the abdomen
exposed.3 I am thus baffled by defendants’ contention that it is
“self-evident from just looking at” this reference that it has an
abdomen portion. At the very least, whether the Douglas chest
protector contains an abdomen portion is a question of fact for the
jury. Accordingly, the Douglas chest protector does not anticipate
the patent-in-suit as a matter of law.
2. The ‘966 Patent
I am also not persuaded that the ‘966 patent indisputably
2Defendants submitted two Douglas embodiments to my chambers but refer only to one of these in their brief. My comments here apply to both of the embodiments I viewed.
3A search on www.dictionary.com reveals a citation to the Random House Dictionary 2009 edition, which defines “abdomen” as “the part of the body of a mammal between the thorax and the pelvis; belly.” Available at http://dictionary.reference.com/browse/abdomen (last accessed April 21, 2009).
4 Case: 1:08-cv-03840 Document #: 121 Filed: 05/04/09 Page 5 of 11 PageID #:
contains “a flexible main pad.” Defendants concede that the ‘966
patent discloses a protective garment with an outer shell layer of
plastic plates (which both the specification and the claims of that
patent describe as “stiff”), but they argue that the invention is
nevertheless “flexible” because 1) the inner portion of the garment
is flexible, which satisfies the requirement that the reference
contain a “flexible main pad,” and 2) the assembly taken together
is flexible because the plastic plates of the outer shell are
themselves flexible and, in any event, are hingedly linked so as to
be capable of folding when disassembled from the inner portion.
To set the stage for their first argument, defendants
characterize the plates as “separate components added to the
flexible inner pad,” then argue that the presence of “additional”
features (i.e., the external plastic plates) in the ‘966 patent do
not diminish the reference’s satisfaction of the “flexible”
limitation in the asserted claim. But it is not the “inner pad”
that must be flexible according to the claim; it is the “main pad.”
I share plaintiff’s skepticism that the term “main pad” can be
construed as referring to the “inner pad” (rather than to the
assembly of the inner and outer portions), which is how the phrase
would have to be interpreted for defendants’ argument to win the
day. Defendants are correct that the transition “comprising” (which
precedes the limitation “a flexible main pad”) typically suggests
an open-ended claim, Crystal Semiconductor Corp. v. TriTech
5 Case: 1:08-cv-03840 Document #: 121 Filed: 05/04/09 Page 6 of 11 PageID #:
Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed.Cir. 2001),
and that provided all limitations of the patent-in-suit are present
in a prior art reference, the presence of “additional” features in
the prior art reference does not undermine its satisfaction of the
criteria for anticipation.4 If the claim language read, for
example, “a main pad comprising a flexible inner pad,” defendants
might have a point, since a “main pad” having both a flexible inner
pad and inflexible outer plates would presumably satisfy the
limitation as written. The asserted claim, however, recites “a
flexible main pad,” and a reasonable interpretation of this
language is that the main pad must be “flexible” when all of its
components are considered together.
This brings me to defendants’ second argument, which is that
even if the inner and outer layers of the chest protector disclosed
in the ‘966 patent are considered collectively to be the “main
pad,” the assembly still meets the requirement of the ‘226 patent
that the chest protector be “flexible.” I cannot decide this
4Defendants cite two unreported cases from other circuits in support of this proposition, Powdermagic, Ltd. v. Rossignol Ski Co., 2005 WL 3981617 at *6 (D. Utah 2005) and Mossman v. Broderbund Software, Inc., 1999 WL 696007 at *8 (E.D. Mich. 1999). Although these authorities obviously are not binding, the holding for which they are cited is consistent with the test the Federal Circuit applies to determine whether a claim is anticipated: “that all of the elements and limitations of the claim are described in a single prior art reference.” Hakim v. Cannon Avent Group, PLC, 479 F.3d 1313, 1919 (Fed. Cir. 2007) (citing Akzo N.V. v. U.S. Int’l Trade Comm’n., 808 F.2d 1471, 1479 (Fed. Cir. 1986). In any event, plaintiffs agree that “whether the prior art has additional elements is irrelevant” to the anticipation analysis.
6 Case: 1:08-cv-03840 Document #: 121 Filed: 05/04/09 Page 7 of 11 PageID #:
question as a matter of law, despite the parties’ agreed-upon
construction of the term “flexible” as meaning “capable of being
bent or flexed.” As to the first prong of defendants’ argument
(that the plastic plates are themselves flexible), most any
material is capable of being bent or flexed if sufficient pressure
is exerted (indeed, even steel structures such as buildings and
bridges are engineered to be flexible enough to withstand the
pressures of wind and earthquakes, for example). That some amount
of pressure will cause the plastic plates to bend or flex thus does
not compel the conclusion that the plates are “flexible” as that
term is used in the patent-in-suit. Moreover, the ‘966 patent
repeatedly describes the plastic plates used in the invention as
“stiff.” Defendants point out that the ‘226 patent itself also
contemplates the use of plastic for the “outer casing” of the main
pad. Unlike the ‘966 patent, however, which specifically describes
the plastic plates used for the outer portion of the garment as
“stiff,” there is nothing in the patent-in-suit to suggest that the
invention contemplates the use of “stiff” outer material in the
“flexible main pad.” The disclosure states only that the outer
layer “may be made of any suitable material, such as fabric or
plastic.” In light of the overall requirement that the main pad be
flexible, a reasonable interpretation of this language is that it
contemplates the use of malleable, rather than “stiff” plastic for
the outer casing. In sum, defendants have not demonstrated, as a
7 Case: 1:08-cv-03840 Document #: 121 Filed: 05/04/09 Page 8 of 11 PageID #:
matter of law, that the plastic plates of the ‘966 patent are
“flexible” as that term is used in the patent-in-suit.
This leaves the second prong of defendants’ second argument:
that the assembly of the inner and outer portions of the invention
embodied in the ‘966 patent is “flexible” because the “stiff” outer
plates are “hingedly connected by flexible straps.” This issue
also cannot be resolved as a matter of law. Plaintiff and
defendants point to the same portion of the ‘966 disclosure in
support of their respective positions: a passage that discusses the
relationship among the various plastic plates. The relevant text
describes an embodiment of the ‘966 patent in which the plastic
plates are connected by “flexible straps” that “afford hinge-like
displacement of the associated plate elements about a hinge axis.”
In addition, the description specifies that “the straps are of a
width and stiffness so as to resist flexing of the straps except
along the hinge axis.” Unsurprisingly, plaintiff focuses on the
“...of a width and stiffness so as to resist flexing...” portion of
this excerpt, while defendants emphasize the “except along the
hinge axis” portion, which they say “directly contradicts”
plaintiff’s argument that the invention in the ‘966 patent is
“rigid.”
Defendants’ argument fails because even assuming the presence
of flexible hinges means the exterior shell cannot accurately be
characterized as “rigid,” reasonable minds can differ as to whether
8 Case: 1:08-cv-03840 Document #: 121 Filed: 05/04/09 Page 9 of 11 PageID #:
the ability of the stiff plastic plates to be “displaced” about
their axes–-but not in any other direction–-satisfies the
requirement that the main pad be “flexible” as that term is used in
the patent-in-suit. A reasonable interpretation of “flexible” as
used in the ‘226 patent is that the main pad must be flexible in
various directions, not merely among a particular axis or axes.5
Indeed, such an interpretation would support the patent-in-suit’s
stated object of protecting a catcher “without restricting the
catcher’s mobility,” which presumably is not limited to movement
along the axes formed by the interconnected plates. In other
words, the hinged movement among the stiff plastic plates disclosed
in the ‘966 patent may render the invention non-rigid without
rendering it “flexible” as that term is used in the ‘226 patent.
For at least these reasons, the ‘966 patent does not
anticipate the patent-in-suit as a matter of law.
3. The Wilson West Vest “Hang Tag”
The final reference upon which defendants rely is the Wilson
“hang tag,” which, as far as I can tell, is the tag attached to the
product when it is sold commercially to consumers. This reference
depicts images of the product from the front, back and side, and
identifies its “individual parts.” These drawings and descriptions
are insufficient to demonstrate anticipation of the patent-in-suit
5This interpretation is not inconsistent with the agreed-upon construction of “flexible” as “capable of being bent or flexed.”
9 Case: 1:08-cv-03840 Document #: 121 Filed: 05/04/09 Page 10 of 11 PageID #:
as a matter of law.
First of all, other than identifying what appears to be the
inner layer of the garment as the “soft underpad,” there is no
evidence that any or all of the portion of the West Vest
corresponding to the “main pad” of the ‘226 patent is “flexible.”
The front view drawing depicts and identifies the following parts:
collar plates; collar roll; shoulder cup; bicep pad; side chest
plates; breast plate; sternum plate; soft underpad; “T” hooks; and
“T” hook slots. (I note in passing that no “abdomen plate” is
identified, and the extent to which the “sternum plate” descends
below the sternum when worn is not ascertainable from the drawing.)
It is not clear from the picture whether certain of these parts are
overlapping or adjacent. I cannot discern, for example, whether
the portion identified as the “breast plate” overlaps with the
parts identified as “side chest plates,” or whether one of these
plate ends where the other begins. Moreover, nothing tells me the
extent to which the “plate” components are themselves flexible or
stiff, or how they are connected to one another, if at all. For at
least these reasons, I cannot conclude as a matter of law that the
Wilson “hang tag” anticipates the patent-in-suit.
10 Case: 1:08-cv-03840 Document #: 121 Filed: 05/04/09 Page 11 of 11 PageID #:
III.
For the foregoing reasons, defendants’ motion for summary
judgment is denied.
ENTER ORDER:
______
Elaine E. Bucklo United States District Judge
Dated: May 4, 2009
11